Likelihood Of Confusion

TTAB’s Reversal- BENDASTIX Not Confusingly Similar To BENDAROOS And BENDAMODEL

Published on: July 4, 2014 | By Nikki Siesel

On June 12, 2014, The Trademark Trial and Appeal Board (“TTAB” or the “Board”) reviewed the Appeal of Fibre-Crafts Materials Corp. (“Applicant”) who had filed a trademark application for the mark BENDASTIX for jewelry making kits and arts and crafts hobby kits for making toys. The Examining Attorney refused the application based on a likelihood of confusion with Merchant Media, LLC’s (“Registrant”) registrations for the marks BENDAROOS (standard character and stylized versions) and BENDAMODEL (standard character) for “flexible building, modeling, and craft toys, namely bendable toys”. See In re Fibre-Craft Material Corp., Serial No. 86727475 (June 12, 2014). The TTAB reversed the refusal. The Board determined that the Registrant’s marks contained a highly suggestive term (“Bend”) in connection with its goods and therefore was entitled to a narrow scope of protection which would allow Applicant’s mark BENDASTIX to co-exist.

The Board relied on the factors in In re E.I. du Pont Nemours & Co., 476 F.2d 1357 177 USPQ 563 (CCPA 1973), and analyzed the probative facts in the record. First the goods were compared as recited in the trademark application and registrations. The applicant was seeking registration for kits for making jewelry and arts and crafts hobby kits for making toys. The Board held that the record did not present any facts to support a relationship between jewelry kits and toys that are bendable. However, the Board found that Applicant’s arts and crafts hobby kits could include bendable toys. Neither the Applicant nor the Registrant limited the trade channels in which the goods will be distributed. At this point in the analysis, the du Pont factors weigh in favor of finding a likelihood of confusion for Applicants craft kits, but not its jewelry making kits.

The next step in the analysis is to evaluate the strength of the marks. The Board will look to the number of similar trademarks on like goods. If multiple third party marks use a particular term for similar goods, the mark may be considered weak. See Palm Bay Imp. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The Board provided an example of a highly suggestive term (“Grand Hotel”) that when used in connection hotel branding was considered weak. In the instant case, due to the extensive use of the term BEND for toys, those marks that incorporate this highly suggestive term, receive a narrow scope of protection. The extensive use of the term BEND demonstrates that consumers have become accustom to distinguishing “BEND” marks in the toy category, based on minor differences between the marks.

Federal Circuit Affirmed: STONE LION CAPITAL and LION CAPITAL Confusingly Similar

Published on: May 23, 2014 | By Nikki Siesel

The two parties involved in this matter are Lion Capital, LLP (hereinafter referred to as either “Opposer” or “Registrant”) and Stone Lion Capital Partners, L.P. (hereinafter referred to as the “Applicant”). The Opposer began using the trademarks LION AND LION CAPITAL in the U.S. in 2005 and filed for registration of the marks under Section 44(d) the Trademark Act. The United States Patent & Trademark Office issued registrations for these marks in 2008 and 2009 respectively. The applicant filed an intent-to-use trademark application on August 20, 2008 for the word mark STONE LION CAPITAL. Both parties identified specific financial services in their respective applications. The Applicant disclaimed the term “Capital” in its trademark application. A disclaimer is a statement within the application wherein the Applicant does not claim the exclusive right to use a specific term or element apart from the mark as shown. See Trademark Manual of Examining Procedure (TMEP) §1213. Essentially, no rights are being asserted in the disclaimed term standing alone, but rights are claimed in the composite mark. The Opposer filed an Opposition with the Trademark Trial and Appeal Board (hereinafter “TTAB” or “Board”) claiming a likelihood of confusion will result if the application for STONE LION CAPITAL registers.

The TTAB refused registration of the Applicant’s mark for STONE LION CAPITAL and the Federal Circuit affirmed the decision. See Stone Lion Capital Partners, L.P. v. Lion Capital, LLP, 110 USPQ2d 1157 (Fed. Cir. 2014) [precedential]. The Board conducted the likelihood of confusion analysis according to the thirteen factors set forth in the case In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The Applicant’s appeal to the Federal Circuit focused on alleged errors made by the Board with respect to the comparison of the marks, the comparison of the classes of consumers and trade channels, and the level of sophistication of the purchasers of the services (factors 1, 3, & 4). The second factor was not challenged because the TTAB determined that the parties’ respective investment services were legally identical.

Regarding the comparison of the marks, the Board pointed out that the Applicant’s mark STONE LION CAPITAL incorporated the entirety of both of the Registrant’s marks (LION and LION CAPITAL). “LION” was considered the dominant part of the marks. Adding the term “Stone” although a non-descriptive word in relationship to the services, was insufficient to distinguish the trademarks. The Federal Circuit agreed with the Board’s conclusion that the marks were similar in sight, commercial impression, sound, and meaning. This factor favors the Opposer.

Is There A Likelihood Of Confusion Between The Marks: IKEA And AKEA?

Published on: May 9, 2014 | By Nikki Siesel

On May 2, 2014, The Trademark Trial and Appeal Board (TTAB) rendered this precedential decision. Inter IKEA Systems B.V. v. Akea, LLC, Opposition No. 91196527 (May 2, 2014) [precedential]. This decision sends a message to trademark owners (even to those owners of “famous” marks). Similar trademarks will be allowed in the marketplace, if there are differences in the goods and services, channels of trade and if consumers are using a moderate degree of care in their purchasing decisions. In this case, Akea, LLC (the “Applicant”) filed an application for the mark AKEA. The trademark application identified Class 5 for nutritional supplements, herbal supplements, and vitamin and mineral supplements, Class 35 for retail services by direct solicitation by sales agents in the field of nutritional supplements; online retail services for nutritional supplements, and advice in the field of career and business opportunities, and Class 44 for providing advice on lifestyle topics of nutrition, diet, nutritional supplements, and gardening (this list is abbreviated). Inter IKEA Systems B.V. (the “Opposer”) challenged the application on the grounds of likelihood of confusion and dilution.

The Board first reviewed whether there would be a likelihood of confusion on the part of the consumers when encountering the marks. To make this determination, the probative facts in evidence would be considered along with the relevant likelihood of confusion factors. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See our firm page entitled, Simple Trademark Rules and Considerations where the thirteen factors are set forth. See also our blog post entitled, Narrowing Identifications In Your Trademark Application May Bring Favorable Results, where the Board was swayed by the differences in the marks and determined that there was no likelihood of confusion. In this case, The TTAB focused on five factors, similarities between the marks, differences between the goods and services, fame of Opposer’s mark, trade channels of the parties, and the consumer’s degree of care in purchasing decisions.

The Board’s analysis is particularly interesting because it found that Opposer’s trademark for IKEA was famous (for retail store services in the area of furniture, housewares, and home furnishings) under the likelihood of confusion determination, but not famous under the dilution analysis. See our blog post entitled, TTAB Precedent -How Fame Impacts A Likelihood Of Confusion Determination. Keep in mind that under the likelihood of confusion analysis, fame is just one factor among multiple factors to consider. Regarding the goods and services listed in classes 5 & 44, when balancing the remaining factors, the Opposer’s fame was outweighed by differences in the goods and services, channels of trade, and the degree of care exercised by the Applicant’s and Opposer’s relevant consumers. However, there was a different result for the services listed in International Class 35.

TTAB Finds Wine And Water Related Goods Under Likelihood Of Confusion

Published on: December 16, 2013 | By Nikki Siesel

For some time, there has been a line between alcoholic and non-alcoholic beverages, and applicants have relied on this lack of precedential finding at the Trademark Trial and Appeal Board (TTAB), when clearing trademarks in the beverage industry. However, Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., Opposition No. 91197659 (June 26, 2013) [citable as precedent], has modified the landscape for clearing alcoholic and non-alcoholic beverages such as wine and water. Before this decision applicants were relying on Cielo S.p.A. V. Austin House of Prayer, Opposition No. 91166590 (September 14, 2007) [not citable as precedent] for guidance. In the latter case, the Board dismissed an opposition that challenged the registration of the mark CIELO for drinking water, finding that there was no likelihood of confusion with the identical marks CIELO, one registered for wine and the other seeking trademark registration for drinking water. The applicant admitted the marks were identical, the products were sold through similar trade channels, and that the two products may be served together. Yet, the Board did not find enough evidence to hold that water and wine originate from the same source, or that circumstances surrounding the sales of the two products are such that consumers would believe that they come from the same source. However, a different holding (citable as precedent) is found in Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc.

In Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., the Board held that the applicant’s registration of the mark GOTT LIGHT for various water beverages is likely to cause confusion with opposer’s previously used and registered marks for wine, under the brands GOTT and JOEL GOTT. It held that the dominant term in both marks was “Gott” and that the marks were similar in sound, spelling and overall commercial impression. Regarding the goods, the TTAB held that “they have been shown to be related, to move through the same channels of trade, and to be available to the same classes of consumers.” The opposer submitted third-party registrations showing that the goods were of the type that would originate from a single source. Further opposer demonstrated that winery branded water is sold in the tasting rooms of wineries. Therefore, consumers can expect that water and wine will emanate from the same source.

Considering Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., is a precedential decision, practitioners and applicants alike would be wise to seriously consider the implications of the decision when clearing marks in the beverage field. Those looking to clear marks in the wine industry, particularly need to proceed with caution, as the TTAB has found a variety of goods and services related to wine for the purposes of a likelihood of confusion analysis. Although there is no per se rule stating beverages and restaurant services are likely to cause confusion when offered under the same trademarks, confusion is found more often than not. Regarding goods, the TTAB has found the following goods to be related to wine: soft drinks, other alcoholic beverages such as tequila, beer, and gelatin shots, food products such as certain sauces and vinegar, and now you can add water to the list.